Suppose that in prior art, all that exist is:

an apparatus comprising of:

A) A shirt piece covering the torso with attaching mechanisms on both the left and right sides of the shoulders;

Someone now attempts to claim this:

an apparatus comprising of:

B) Protective paddings covering the shoulders removably attached to said attaching mechanisms of said 360-degree ring.

Would the second claim be allowed? Why or why not?


1 Answer 1


*The artificialness of the question makes a direct answer useless. I will try to explain some basic principles.

If any aspect at all in a claim can’t be found in the prior art then the claim is to something novel. So it is novel.

To make an obviousness rejection an examiner needs to break down the elements of a claim and identify some prior art that teaches each element. Not one reference that teaches all the elements but some one or more references that teach each element. Some base reference in the same field of the invention usually contains a few elements and other elements can come from different but analogous fields or even from non-analogous fields if they bear on a comparable problem.

Then using those references, or others, needs to make an argument that a POSITA would think to put the elements together to form the claimed device.

In the very artificial vacuum you have created there are no prior art teachings of 360 degree rings around the neck with attachment mechanisms. There are actually not even any typical shirts. So it can’t be shown to be obvious.

  • An earlier item, if known to the examiner, can’t by definition infringe a later filed patent application.
    – George White
    Sep 13, 2022 at 22:43
  • No - In your scenario a typical shirt does not exist - the ONLY relevant prior art is the thing you stated. You invented a non-existent world with no typical shirts (just edited it to be clear), or my answer would have been different and there would be no contradiction. I think you are not going to learn what you want to learn by this series of questions.
    – George White
    Sep 15, 2022 at 0:30
  • Could you delete your answer? Because I need to delete this question. Sep 15, 2022 at 4:48

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